WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION WebMD LLC v. David Russel Case No. D2009-0773 1. The Parties
The Complainant is WebMD LLC of New York, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is David Russel of Atlanta, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2009. On June 12, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 12, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 8, 2009.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 17, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
In 1998, the Complainant began offering services related to healthcare on a worldwide basis through registration and use of the domain name . Subsequently, the Complainant obtained valid United States Patent and Trademark Office (“USPTO”) registrations (e.g., Registration No. 2349285, issued May 16, 2000; and Registration No. 23494818, issued October 17, 2000) for its service mark, WEBMD, in furtherance of its legitimate and successful business.
The Respondent registered the disputed domain name, , on March 17, 2009. Among other uses, the Respondent employs the disputed domain name to redirect Internet users to its website, where they are introduced to healthcare remedies not associated with the Complainant. 5. Parties' Contentions A. Complainant
Since at least January 1998, the Complainant has used the service mark and trade name, WEBMD, to identify health care related services to consumers, physicians, laboratories, institutions and administrative personnel. Those services are provided over the Internet through Complainant's website found at “www.”.
The Complainant registered on April 6, 1998, and it currently logs more than 61 million visitations per month, making Complainant the leading online health web site in the world.
The Complainant owns several USPTO registrations for its mark and related marks. Through use on the Complainant's website, that mark has become one of the most recognized healthcare brands in the world.
The Complainant has never licensed use of its mark to the Respondent, who has neither served as a representative of, nor been employed by, the Complainant. Yet the Respondent uses the disputed domain name in such a manner that the Complainant has received correspondence from consumers who confuse the Complainant with sponsorship of the services and/or products offered under that name.
The Complainant attempted to contact the Respondent to request that he discontinue use of the disputed domain name and transfer ownership to the Complainant. The Complainant received no reply.
Because the disputed domain name incorporates the Complainant's mark, together with a single generic term, it is at least confusingly similar to that mark. The similarity is increased since the generic term, “reviews”, applies to one aspect of the Complainant's services: furnishing reviews of healthcare and lifestyle information generated by third parties.
The Respondent has no legitimate use for the confusingly similar domain name in question, which was registered more than a decade after the Complainant began using its service mark. The Respondent is deliberately trading on the goodwill associated with that mark in an attempt to divert Internet traffic to its own website.
There is no evidence that the Respondent is commonly known by the disputed domain name. Moreover, there is no evidence that the Respondent is making noncommercial or fair use of the name. The Respondent is using the disputed domain name in its business to market a specific product that claims to promote weight loss, colon cleansing and increased energy.
The disputed domain name was registered and is being used in bad faith. The Respondent knew, or should have known, of the goodwill and reputation associated with the Complainant service mark, and it is inconceivable that the Respondent was unaware of the Complainant's rights in that mark before registering the name. The Respondent registered and is using the disputed domain name deliberately to attract Internet users to its own website based on confusion with the Complainant's mark.
The Respondent's use of the disputed domain name hinders consumers in their attempts to access the Complainant's website, and may lead those consumers to discontinue efforts in searching for that website. Therefore, the Respondent's deliberate and willful actions harm the Complainant and the public interest as well. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) – (iii) of the Policy, the Panel shall find for Complainant in these proceedings and direct a transfer of the disputed domain name, , if the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name is registered and being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Through presentation to the Panel of unambiguous evidence that it owns valid USPTO registrations (Annex 4) for the service mark WEBMD, the Complainant has proven its claim to rights in that mark. See, Vivendi Universal Games and Davidson & Associates, Inc. v. XBNetVentures Inc., NAF Claim No. FA198803 (“…Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); and Kraft Foods, Inc. v. Nowon Uknow,WIPO Case No. D2005-1153 (“The Complainant beyond question has established rights in the KRAFT mark through registration and use.”)
The disputed domain name, , is distinguished from the Complainant's mark, WEBMD, by the hyphenated addition of the generic word “reviews” and the obligatory gTLD, “.com.” The Panel views these distinctions as minor when evaluating the confusing nature between the name and mark. The Complainant avers, without contention from the Respondent, that the Complainant's business includes reviewing various healthcare options for consumers and others, thus rendering the additional word more likely to increase, rather than reduce, confusion as to ownership of the disputed domain name. Therefore, the Panel – in line with countless previous UDRP panels facing similar circumstances involving the addition of generic terms to established marks – must find that the disputed domain name is confusingly similar to the Complainant's service mark. See, Amica Mutual Insurance Company v. C/Merab Okruashvili, Amica Insurance,WIPO Case No. D2009-0406 (finding that the disputed domain name, , is confusingly similar to the trademark AMICA when the panel noted, “[t]he word ‘insurance' is related to the nature of the products and services that the Complainant provides under its AMICA trade mark.”); and Victoria Secret Stores Brand Management, Inc. v. Chen Fang Fang, NAF Claim No. FA1257933 (finding to be confusingly similar to the trademark VICTORIA'S SECRET, where the owner of that mark sold an extensive line of shoes).
Accordingly, the Panel rules that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant's submission to the Panel of valid service mark registration evidence and the Complainant's statement it did not license to the Respondent the right to use that mark establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. That showing is sufficient to shift the burden onto the Respondent to produce evidence to the contrary. For examples, see Mattel, Inc. v. yesbarbie, NAF Claim No. FA114754 (“…Complainant's establishment of a prima facie case shifts the burden to Respondent to show rights or legitimate interests.”); and AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
Since the Respondent has failed to submit a Response, the Panel has searched the record for evidence supporting the Respondent's position, but has found none. As a guide, the Panel used the criteria cited in Policy paragraph 4(c) which, if found applicable, would avail the Respondent regarding this issue. Paragraph 4(c)(i) requires that the Respondent show that he is using, or is making demonstrable preparations to use, the disputed domain name in a bona fide offering of goods or services. However, the Complainant presented strong evidence – which the Panel accepted as it was not contradicted anywhere in the record – that the Respondent is using the name to direct Internet users to its website where a third party's healthcare products (directly competing with the Complainant's services) are offered. Many prior Policy panels have declared that such use does not constitute an offering that is bona fide, and the Panel concludes that such reasoning should control in this case. Moreover, as this action by the Respondent is clearly and solely commercial in nature, the Panel also determines that paragraph 4(c)(iii), which requires noncommercial or fair use of the name, is inapplicable. See, Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052 (“Respondent's use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to [the] Policy.”); and Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publishers, NAF Claim No. FA151536 (“Respondent operates in a similar field as Complainant and therefore…Respondent's use of the domain name for a competing website does not constitute a bona fide offering of goods or services pursuant to Policy [paragraph] 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy [paragraph] 4(c)(iii).”).
Finally, regarding the defense cited in paragraph 4(c)(ii), the Panel found absolutely no evidence present in the record to believe that the Respondent, nominally David Russell, is or was ever commonly known as “webmd-reviews” or any close variant of that term.
Accordingly, the Panel rules that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that the Panel issue a finding of bad faith registration and use of a disputed domain name if “by using the disputed domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] website or location or of a product or service on [the Respondent's] website or location.”
In this case, the Panel – in the absence of any contradictory evidence presented by the Respondent – shall accept the Complainant's contention that the Respondent is using the disputed domain name to redirect Internet users to its website to market products deliberately for its commercial gain. Clearly, given the renown of the Complainant's service mark, such Internet users are likely attracted due to the confusion between the name and the mark, which creates the reasonable expectation that the two are affiliated. As a result, the Panel is led to conclude that the circumstance cited in paragraph 4(b)(iv) applies neatly to the Respondent's actions and brings a finding of bad faith registration and use under the Policy. See, for example, Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd.,WIPO Case No. D2004-0554 (“Without any evidence to the contrary, it cannot be mere coincidence or innocence that the Respondents chose both a designation confusingly similar to the Complainant's trademark in the disputed domain name and the trademarks associated with specific product ranges of the Complainant in relation to its own similar products on the Website…which falls within the circumstance outlined in paragraph 4(b)(iv) of the Policy.”); and WebMD Corporation v. Cupcake Patrol, NAF Claim No. FA96106 (ruling that the disputed domain name, , was registered and used in bad faith, with respect to the service mark, WEBMD, the panel stated that, “Respondent's domain name was registered to intentionally attempt to attract, solely for commercial gain, Internet users to its web site (or other online locations) by using a domain name that is confusingly similar to Complainant's famous mark.”)
Accordingly, the Panel rules that the Complainant has satisfied the requirements of Policy paragraph 4(a)(iii). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: July 31, 2009
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